What’s in a brand?
What’s in a brand? You’ll get a different answer depending on
who you ask. The concept of a brand is broad enough to capture
a great diversity of constituent elements and interests. Despite,
or perhaps because of this, powerful brands have as a central
feature the capacity for people to unite around a common theme,
a shared vision, an emotional connection. With the brand value
of each of the top ten of Interbrand’s Best Global Brands 2013
estimated to be worth over $30bn (and in some cases much
more), there’s certainly no doubting the value of a strong brand.
By Nick Aries
From a legal point of view, the word brand instantly conjures
up the notion of trade mark rights (both registered and
unregistered). However, other IP rights come into play too,
notably copyright and designs.
In this edition of BrandWrites we take a look at a range
of topics relevant to the life cycle of a brand. From the
creation of rights in brands (e.g. the new gTLD regime),
through the enforcement of rights (e.g. Rihanna’s
rights in her ‘personal’ brand), to brand exploitation
(e.g. endorsement contracts and ambush marketing),
these are issues which brands interact with on a daily
basis. Hopefully, some food for thought for those
with an interest in nurturing a successful brand.
Proposals for the
modernisation of the European
trade mark system
In March 2013 the European Commission published
proposals aimed at making trade mark registration in
Europe cheaper, quicker and more reliable. In July 2013
the Legal Affairs Committee of the European Parliament
(EP) published a draft report on the proposals.
Key changes for trade mark owners
In the proposals the graphical representation requirement
is abolished. Instead, a sign must be capable of being
represented in any appropriate form which enables the
competent authorities and the public to determine the
precise subject of the protection afforded to its proprietor.
This offers more flexibility and legal certainty by allowing
the use of modern representation techniques. This
proposal may allow non-traditional trade marks such as
smells and moving images to be registered more easily.
The proposals clarify that class headings may be used
in trade mark applications if they are sufficiently clear
and precise. Owners of trade marks already registered
will have 4 months to declare that, at the date of filing,
they wished to seek protection in respect of goods and
services beyond the literal meaning of the class heading.
This could allow owners of trade marks to broaden
the scope of their trade marks retrospectively and also
leads to the question of what happens when trade
mark owners do not file the proposed declaration.
Double identity cases
In infringement cases involving the use of an identical
sign in relation to identical goods or services (“double
identity” cases) infringement will only occur if the main
function of the trade mark, to guarantee the origin of
the relevant goods or services, is adversely affected.
This requirement has caused debate among trade
mark owners since they see it as a limitation of the
scope of protection in double identity cases. The Legal
Affairs Committee of the EP suggests not including this
requirement as it would lead to legal uncertainty.
At present, for the base trade mark registration
fee, applicants can register in up to 3 classes of
goods and services. Under the proposals, there
would be a lower base fee for registration in one
class, with additional fees for extra classes.
By Linda Brouwer and Manon Rieger-Jansen,
Designations of origin, geographical indications
Designations of origin and geographical indications
that are protected under other EU agreements
are specifically included as absolute grounds
for refusal of a national application.
Counterfeit goods in transit
Trade mark owners will no longer have to prove
that goods in transit will end up on the European
market to be able to establish infringement.
Bad faith will be introduced as a ground to oppose an
application where the trade mark is liable to be confused
with an earlier trade mark protected outside the EU, resulting
in broader protection for marks registered outside the EU.
The proposals do not create a ‘new’ European trade
mark system but introduce changes to the Trade Mark
Directive and the Community Trade Mark Regulation
which aim to streamline registration procedures
throughout Europe and modernise existing provisions
to create more legal certainty for trade mark owners.
The proposals are meant to be adopted by Spring
2014, after which Member States have two years
to implement changes to the Trade Mark Directive
into national law. The Community Trade Mark
Regulation will have direct effect. To be continued!
By Emile Saadi and Melissa Murray,
opportunities and challenges
Global sporting events often attract the most innovative brand
marketing. Great opportunities, however, often come at a cost;
sponsors of the London 2012 Olympics, for example, paid up
to $100 million to be officially associated with the event.
Unsurprisingly, ambush or “guerilla” marketing is a common
issue arising at the world’s largest sports events. Football
fans will recall Bavaria beer’s controversial “orange dresses”
at the 2010 FIFA World Cup, or the frequency with which
athletes wore Beats by Dre headphones at the London 2012
The Middle East has a plethora of globally recognised, and
often sovereign backed, events such as the Etihad Airways
Abu Dhabi F1 Grand Prix, the Mubadala World Tennis
Championship, DP World Tour Golf Championship, and
Commercial Bank Moto Grand Prix of Qatar.
The 2022 FIFA Football World Cup will be hosted in the gulf
state of Qatar. This is likely to ignite interest in unofficial
brand association not only with the World Cup but also with
other global sporting events in the region. This leads to the
question: “is ambush marketing illegal in the Middle East?”
In keeping with most countries, including the USA and
England, the Middle East generally does not have specific
legislation prohibiting ambush marketing, but this does not
mean it is permitted.
Taking the UAE as an example, the UAE has some of the
most developed laws in the region, and there are a range
of provisions in UAE law that potentially prohibit ambush
marketing. Any marketing that includes false particulars
or misleading statements/pictures is prohibited. Further,
imitating a trade mark, or using a trade mark without
permission, is further prohibited. Also, all advertisements
must be consistent with the rules of Shariaa Law, public
order, public decency and the traditions of the UAE.
Finally, and perhaps most crucially, advertisements must be
specifically granted a permit by the relevant ministries. For
this reason, ambush marketing is not commonplace. Further,
given the importance of Qatar 2022 to Qatar’s economy,
it is possible that Qatar will, leading up to the World Cup,
issue either general advertising laws and/or specific decrees
regarding advertising for the event. This will need to be
monitored carefully to avoid falling foul of any such new
While overt ambush marketing, along with anything that
is misleading or false, is likely to be rejected, there are
opportunities for brands to benefit from a big event. There
are some great international examples of marketing of
this sort that are clearly not misleading. It is, therefore,
possible that brands who are well advised can still engage
in marketing efforts to benefit from events in the region.
However, we recommend seeking legal advice before
undertaking such activities.
UK image rights post-
Topshop sold a t-shirt bearing Rihanna’s image, without
Rihanna’s permission. The English High Court held that this was
passing off of Rihanna’s image. Rihanna is “regarded as a style
icon by many people” and has goodwill “not only as a music
artist but also in the world of fashion, as a style leader”. The
sale of the t-shirt damaged Rihanna’s goodwill as it “amounts
to sales lost to her merchandising business” and “represents
a loss of control over her reputation in the fashion sphere”.
Before this case, the general perception was that merely
placing a celebrity’s image on merchandise without their
permission did not constitute infringement of their rights.
This case - the only UK case in recent memory in which
a celebrity succeeded in preventing a retailer from using
their image on merchandise (as opposed to on advertising
material) - has revealed this thinking may be mistaken.
The conclusion reached in this case was
tied very much to its particular facts:
• it involved a true global superstar who works hard
to cultivate a brand not just in the world of music
but also in the world of fashion (Rihanna);
• the image was a notable image of that global
superstar which was prominent at the time (it
came from a video shoot which had received press
attention for being allegedly too risqué); and
• the retailer involved, Topshop, makes a huge amount
of effort to emphasise its connections to style icons.
It’s not hard to see that this decision could significantly
widen the scope of ‘image rights’. As consumers grow
more and more used to purchasing merchandise endorsed
by or officially connected with a celebrity, the scope for
challenges based on ‘image rights’ widens. The judge
said that “purchasers would not be surprised to find
goods on sale in Topshop which have been endorsed
or approved by celebrities”. However, you could also
say this about other high street retailers today.
And with so many celebrities attempting to branch
out from their original fields of fame into the world of
fashion, retailers may begin to wonder where the line
is drawn, and which celebrities have put in enough
‘effort’ to have a reputation in the fashion world.
There will be further developments in relation to the
English Courts’ approach to celebrity image rights in the
near future. Topshop have appealed the judgment and a
decision from the Court of Appeal is likely in 2014. If the
first instance decision is upheld this is likely to fuel further
image right cases. While the judge in the Rihanna case was
at pains to point out that a market stall selling the same
t-shirt would not have been infringing, it remains to be
seen what would happen in a case involving a celebrity
with less star power and a different high street retailer.
By Peter Brownlow,
gTLDs: where are we now?
Since 2011 ICANN, the organisation responsible for the management
of the top-level domain space, has been embarking on a program
of expansion to allow for the registration of a vast number of new
gTLDs (generic top level domains).
Applications for new gTLDs were accepted from January
2012 and the first gTLDs proceeded to the final stage of the
process on 22 October 2013. At the time of publication,
there have been 1,930 applications for a variety of gTLDs.
Among the most prolific applicants have been
Google, with 101 applications, and Amazon, with
76. By contrast, Microsoft has so far only applied
for 11 gTLDs and Yahoo for just two, both relating to
Yahoo-owned trade marks (.yahoo and .flickr).
Trade mark owners can register their marks with
the Trademark Clearinghouse (“TMCH”) in order to
gain protection in relation to gTLD registrations.
Once a mark is registered with the TMCH
the trade mark owner will benefit from the
‘sunrise period’ and the ‘claims period’.
The sunrise period is designed to give priority to brand
owners to register their own marks as sub-domains.
In this period, which must run for at least 30 days,
trade mark owners who have registered their marks
with the TMCH can apply before the general public to
register sub-domains that exactly match their marks.
The claims period runs for at least 90 days after the sunrise
period. In this period, the TMCH is required to: (a) send a
warning to any party that seeks to register a sub-domain
that exactly matches a mark registered with the TMCH;
and (b) notify the trade mark owner if the applicant
ignores the warning and registers the sub-domain.
In practice, the usefulness of both the sunrise period and
the claims period for trade mark owners is limited by the
fact that the services only apply to sub-domains identical
(but not similar) to marks registered with the TMCH.
However, it could still be a useful strategy in some cases.
Brand owners who wish to take action against sub-domains
which infringe their rights and are registered under new
gTLDs can also turn to the Uniform Rapid Suspension
procedure (for suspension of domain names in clear cases of
trade mark infringement – see e.g. suspension of ‘.facebook.
pw’). This sits alongside the standard domain name dispute
policy (UDRP) which many brand owners are already
familiar with, and which continues to apply to new gTLDs.
‘Closed’ gTLDs and ‘open’ gTLDs
Until recently, applicants could either choose to apply for
gTLDs that are ‘generic’ words as ‘closed’ or ‘open’ domains.
A closed application would be for the gTLD’s use solely by
the applicant’s business. For example, the owner of a closed
gTLD for ‘.cook’ would not allow an unconnected party to
use any .cook sub-domains.
By contrast, an open application indicates that the
applicant will allow third parties to set up sub-domains and
control their content. So, in an open application for .cook,
somebody could apply to register and operate a website at
‘learnto.cook’, for example.
The topic of closed gTLDs for generic words generated a
significant amount of debate and criticism. It’s clear why
these gTLDs have strong opposition – a closed registration of
a generic word would allow a company to have a monopoly
over that generic word (e.g. cook).
As a result, in July 2013 ICANN temporarily froze closed
applications for generic words. It remains to be seen whether
ICANN will re-open these applications. It remains possible,
though, to apply for a closed ‘.brand’ gTLD registration.
Brand owner view: Merck KGaA
Merck applied for a gTLD to communicate the global initiatives of
our Merck Community, which are focused on innovation.
Merck is convinced that the new gTLDs offer the great opportunity to use state of the art
technologies which underlines Merck’s mission to deliver first class products, treatments
and solutions in the business areas of chemical, pharmaceutical and life science.
We expect that especially in our field of business, internet users will benefit from our modern,
safe and trustworthy Internet presence clearly designated to the original Merck Community.
The new gTLDs support our continuous efforts to fulfil our promise associated with the brand.
By Fidel Porcuna,
Lessons for sponsors:
On 12 June 2013 the Spanish public prosecutor lodged
a criminal claim against Barcelona footballer Lionel
Messi for tax fraud. Messi is a worldwide celebrity, so
the claim has attracted a lot of press attention.
News of the claim will have been unpleasant not
only for Messi but also for his sponsors, as the
negative impact of such a claim could extend to the
reputation of the brands Messi was endorsing.
Sponsors may even argue that, in such situations,
endorsement agreements might be rendered worthless
because the purpose of the endorsement as originally
pursued (to associate a brand with the positive values
generated by the star in question) is defeated when the brand
begins to be associated with negative publicity about them.
Sponsors might also wonder if claims against their stars
could be a reason to terminate their agreements. This may
be so, but this area is fraught with problems of interpretation
where the parties’ rights in this regard are not set out
precisely in the agreement or where morals or customs
differ from one nationality to another. Sponsors face a
difficult balance between a generic clause, which might
not be sufficient as it could leave them unprotected from
uncertain but still damaging acts, and a clause that attempts
to set out specifically every act that might cause damage to
the sponsor’s brand, which would always be incomplete.
Taking a recent example from the franchising world, The
Body Shop’s franchise contract was the subject of a case
in the Madrid Appellate Court. The contract provided
a right to terminate where the franchisee, or any of the
managers, executives, directors or partners acted in
a way that could damage the repute or quality of the
products, or in a way contrary to or in conflict with the
values of the beauty care brand. The court held that this
clause was sufficient to entitle the franchisor to terminate
an agreement with a franchisee who was suspected of
using the franchised shops for money laundering.
Sponsors, therefore, will need to carefully examine the
particular circumstances of the parties, their respective
values, the specific products and services to be endorsed,
as well as the territorial scope of the agreement. The aim
is to balance the risks of damage to the reputation of a
house brand by an association with an external party’s
activities which are beyond the brand owner’s control,
with the benefits that come with the endorsement
of an individual with a large public following.
By Ai-Leen Lim and Rhonda Tin,
Upcoming changes to
the Trade Mark Law in China
On 1 May 2014, important changes to the Trade Mark Law in China
will come into effect. In this article, we set out some highlights from
the upcoming changes.
• Sounds can be registered as trade marks. No specific test
for the registrability of sound marks is provided, so sound
marks should satisfy the registrability requirements that
apply to other kinds of marks.
• Multi-Class applications will be made available, which will
ease administrative work and reduce costs in relation to
trade mark portfolio management. It is not yet known,
though, whether official filing fees will be adjusted
• A general principle, taken from the General Provisions
of the Civil Law and stating that registration and use of
trade marks should follow the principles of honesty and
trustworthiness, will act as a “catch-all” provision to
govern trade mark applications and use. This principle
is not a ground in trade mark oppositions or trade mark
invalidations and its significance has yet to be seen.
• The registration of another person’s unregistered mark
that has been used previously on identical or similar
goods is prohibited if there is evidence showing that the
applicant has clear knowledge of that other person’s mark
through contractual, business or other relationships.
• An opponent who relies on relative grounds must be the
owner of the earlier right or an interested person. Any
person may file an opposition on absolute grounds of
refusal. With this amendment, the previous practice of
relying on an unrelated party’s registered mark to file an
opposition will no longer be possible, unless the opponent
can show that it is an interested person.
• If the Chinese Trademark Office rejects an opposition,
the opposed mark will be registered. The opponent may
then file an application with Trademark Review and
Adjudication Board (TRAB) to invalidate the registered
mark. This is a change to current practice, where the
opposed mark remains unregistered while an opponent
files a review with the TRAB.
• Any person may file a cancellation against a registered
mark if the mark has become a generic name for its
designated goods/services. To guard against this,
rights holders should use the symbol “®” alongside the
registered mark, monitor the use of the mark in the
market, and actively enforce their rights against infringers.
• In an invalidation handled by the TRAB, if the earlier right
needs to be determined on the basis of the decision of the
court or the administrative authority in another case, the
invalidation can be suspended. The proceedings can be
restored when the reason for the suspension no longer
• Rights owners will have to demonstrate that their “use”
(or in infringement cases, the infringer’s “use”) is “to
identify the origin of the goods”. It will be interesting to
see if there is certainty and consistency in determining
whether OEM use will amount to trade mark infringement
or will be sufficient to defend against non-use
• If, before the filing date of a registered mark, another
person has used an identical or similar mark for identical
or similar goods and the mark has acquired a certain level
of influence, the registered mark owner will not have the
right to stop that other person from using the mark in its
original scope, but may ask that other person to use an
additional sign to distinguish the marks.
Madrid Protocol: new joiners
Mexico, India, Rwanda and, most recently, Tunisia
have all joined the Madrid Protocol in 2013. The World
Intellectual Property Organisation’s Madrid system for
the international registration of marks allows brand
owners to file trade mark applications in a number
of different countries through a single, international
application. Subsequent changes and renewals to
registrations can also be managed through this
centralised system. Brand owners interested in Mexico,
India, Rwanda and Tunisia now have the opportunity to
protect their brands in those countries via the Madrid
In August 2013, the UK IPO issued a Practice Amendment
Notice (PAN 03/13) following the Court of Justice of the
European Union’s decision in the IP Translator case. The
Court had confirmed that terms used in a trade mark
specification to identify goods/services covered by the
mark should be sufficiently clear and precise. The IPO’s
practice note sets out how it will treat UK trade mark
applications containing certain forms of specification:
• “All goods in class X” will result in an objection.
• If an applicant wishes to register for all goods and
services in a particular class, they should list all the
individual items in the alphabetical list.
• Certain ‘General Indications’ (i.e. parts of a Class
Heading) should be avoided as being too vague – see
the list in the PAN.
Non-traditional UK trade marks
In October, the English Court of Appeal handed
down judgments in two joined cases concerning the
registrability of certain trade marks (Nestlé v Cadbury;
and J W Spear & Sons v Zynga). The Court found that
the two trade marks at stake (a particular colour mark
for Cadbury in one case; and a scrabble tile mark for
Spear/Mattel in the other) failed to fulfil the requirement
of being “a sign”, and were therefore also insufficiently
graphically represented. The Court said this was because
the registrations at stake potentially covered a variety of
different marks. The judgment means that a number of
existing ‘non-traditional’ UK trade marks (i.e. sounds,
colours, shapes, etc) may be vulnerable to invalidity,
depending on their form of registration and any
Get in touch if you would like our help
with reviewing your TM portfolio.
New Customs Regulation
(EC No. 608/2013)
From 1 January 2014 the new EU Customs Regulation
(replacing regulation EC No. 1383/2003) will have direct
effect across member states.
The new regulation should simplify aspects of the
customs enforcement proceedings for rights holders:
• The currently optional ‘simplified procedure’ for
destruction of goods without a court order under
certain circumstances will now be compulsory in all
• Rights holders will be able to opt in to an expedited
procedure for the destruction of small postal
consignments. Opting in will give customs authorities
the power to destroy these small consignments
without the need for rights holders to provide
Croatia joins the EU
Croatia joined the EU on 1 July 2013
and as a consequence, EU-wide brand
protection measures now include Croatia.
CTMs filed on or after 1 July 2013 will
cover Croatia as well as the other EU Member
States. CTMs filed on or before 30 June 2013 are
‘grandfathered’ (i.e. they are automatically extended to
cover Croatia). There is no need for rights owners to
Rights holders can now apply for Customs actions
against counterfeit goods in Croatia. Parties wishing
to do this can either file a National Application for
Action with the Croatian customs authorities or file
a single Community Application for Action with the
designated customs department in their Member States,
remembering to include Croatia on the list of countries
in which they wish customs action to be taken.
Nick Aries and Tristan Russell,
Exposure are an independent communications agency,
formed in 1993. Exposure work with a variety of fashion
& lifestyle and blue chip brands to create campaigns
and content that provide creative solutions to business
challenges. Here, we put some questions on brands to
James Burgon, Exposure’s CFO…
How has social media affected branding?
Social media has had a huge impact on branding. Historically,
brands produced branding which communicated
to consumers. In the social media world, branded
communication must be designed to encourage the user to
share communication with other consumers. Consumers
don’t share advertising, but they share stories and details.
For example: a consumer who buys jeans will never
share the fact that they bought the jeans because they
saw a model wearing them in an advert, they will refer
to fit, cut, denim quality, stretch, and product details so
the social media communication message needs to be
completely different to encourage the consumer to share.
What challenges do you see for brand
owners in the future?
The biggest challenge for most brand owners is the speed
that information can be distributed via the internet,
the consumption of messaging on multiple platforms
simultaneously and the growth in e-commerce and
m-commerce via multiple devices. Brand owners of the future
need to have real honesty and complete integrity. Ethical
sourcing, sustainability, product truths, personal service,
grace and politeness are distinguishing factors required by
consumers. Many sectors have ubiquitous products so the
way those products are delivered to the customer is vital.
For example, no one talks about how great a particular bank
product is because such products are all very similar, but poor
customer service by a bank will be shared via media channels
with millions of people in seconds. The consumer may be
reading negative social media at the same time as watching a
slick TV commercial for the same brand.
Which brands do you admire and why?
Coke - because they share happiness.
Levi’s - because I always wear them and whenever I try other
jeans, then just don’t feel right.
John Smedley - John Smedley are made in the heart of
Derbyshire and I have been a huge fan since I was 16 years
old. Their sea island cotton and merino wool polo shirts and
pullovers are timeless and a perfect example of a fantastic
British Brand. When worn they never fail to generate positive
comments, they are worth every penny and to top it all, they
are machine washable!
Heineken - Heineken constantly innovates. I loved the metal
barrel tins that they introduced into the market a number
of years ago and recently I read that they have launched an
amazing beer dispenser for the take home market in Europe.
It’s called “The Sub”. It hasn’t launched in the UK yet but
watch this space!
What have been the highlights for
Exposure in the last 12 months?
Minnie Mouse Love Magazine collaboration - it was an amazing
campaign which made Minnie Mouse a front cover fashion
Bacardi Martini 150th Anniversary - it was the best event
Exposure have ever produced.
Reinventing training at EE, which received incredible feedback
from the attendees.
How does IP affect what you do?
IP is becoming more important in agency communication as
brands collaborate with each other, with music stars, with
celebrities etc. Global worldwide rights in perpetuity are
difficult and expensive to acquire in a multiplatform world.
How do you see the role of branding
elements such as smells, sounds and
Sounds which can be picked up by smart phones but not
necessarily the human ear is an area that will grow: for
example sounds that can launch apps for brands.
The importance of the relationship
between branding agencies and
Intangible assets, such as a portfolio of brands, are key differentiators of
a business in an increasingly competitive global commercial market.
Business owners look to branding agencies to develop
such differentiators. The creative output from a branding
agency generates intellectual property rights such as
copyright and trade marks. Given the saturation of brands
it is critical for branding agencies to work closely with
their legal representatives to ensure the client can “own”,
in a legal sense, what the branders develop and that
they do not infringe another party’s existing rights.
One recent matter in Australia highlights the importance
of the relationship. After spending some months
developing a new brand and associated visual identity
for a telecommunications company, the agency
realised, at the eleventh hour and under enormous
pressure from the client to launch the business, it
needed to conduct clearance checks of the brand.
Although the clearance searches revealed some potential
infringement issues, the agency decided to go against
the legal advice, given the imminent launch date
for the business. The outcome was regrettable. The
business launched under the new brand in connection
with considerable branding collateral and expense.
The competitor was alerted to the new brand and
lawyers were instructed to send a nasty letter.
Although going back to the drawing board prior to launch
would have meant a grumpy client due to missed deadlines,
it would have avoided the added expense of rollout material,
legal costs, and the embarrassment of ‘getting it wrong’.
Lawyers and brand agencies can work together. Instead of
viewing legal input as a hindrance to the creative process,
if lawyers are involved early in the design process, the legal
and brand team can provide an important value add to the
client. From a governance perspective it makes sense, with
many businesses questioning why an agency should be
able to charge a client for a design or identity that the client
can’t register or that results in infringement proceedings.
Important points to note:
• Logo trade marks are not “word” marks. A logo mark
incorporating the new brand does not necessarily
allow you to stop others using the word alone.
• If the client’s budget doesn’t allow for the costs of trade
mark registration, ensure that at least preliminary
searches are conducted prior to launch and use of the
™ symbol is adopted to put third parties on notice
that the brand is being used as a trade mark.
• Understand who created the brand and who
the ultimate owner is meant to be.
• Conduct searches of each market in which the client
intends to commence business prior to launch to ensure
a uniform global brand strategy can be adopted.
• Discuss the brand guidelines for each brand
with the lawyers to ensure the trade mark
registrations accurately reflect the branding
agency’s recommended use of the brands.
Aleksandra Karpińska and Piotr Dynowski ,
‘Well-known’ trade marks:
Kucharek v Vegeta
On 3 September 2013 the Polish Supreme Administrative Court
issued an important decision providing guidance as to the factors
that should be taken into account when determining whether a
trade mark is a well-known one.
These factors had been rather unclear in the light of
statutory regulation and earlier case law. The guidance
concerns, among other things, use and assessment of
surveys as evidence of knowledge and recognition of
the trade mark by the public. Well-known trade marks
are protected once they are generally recognised as
trade marks by the relevant public. Due to lack of
formal registration, it is more difficult to establish
when such protection starts and what its scope is.
The case concerned the marks Kucharek (owned by
Prymat sp z o. o.) and Vegeta (owned by Podravka
Prehrambena Industrija). Kucharek and Vegeta are
popular all-purpose spices sold in Poland. Both are sold
in blue packaging containing the image of a chef with
fresh vegetables. The dispute between these parties goes
back 14 years, with Podravka originally filing invalidation
proceedings against the Kucharek trade mark in 1999.
Podravka claimed that their Vegeta trade mark is wellknown
in Poland as a result of its use and advertisement
over 25 years. Podravka were able to win on this
argument in the lower Polish courts, which found that
Vegeta is a well-known trade mark in Poland and so
benefits from protection against similar marks. This
conclusion was based on an assessment of surveys which
proved that the name Vegeta was recognised by 98%
of respondents and used by 59% of respondents.
On appeal, the Polish Supreme Administrative Court held
that the court of lower instance did not investigate properly
what elements were regarded by the relevant public to be
the Vegeta well-known trade mark. As the surveys concerned
exclusively the name Vegeta, they were insufficient to prove
that the whole trade mark in question, i.e. a trade mark
consisting of the name Vegeta and the image of a chef with
fresh vegetables on the blue background, was well-known.
The court set out the following guidance that should
be used when assessing whether a trade mark benefits
from protection as a well-known trade mark:
• The description of the sign in question must
be precisely established (since the trade mark
is unregistered, there will be no registration
documents showing the exact scope of the sign).
• A sign has to be universally known in its function as
a trade mark. It is not enough to prove that the sign
is widely known; the sign must be associated with a
particular product as an indicator of the product’s origin.
• It is also necessary to prove that the sign in question
enjoys strong public awareness as a mark that
distinguishes the product from others on the
market. This can be achieved through surveys,
but the survey questions must concern the whole
trade mark and not only its verbal element.
This guidance is of use both to owners of trade marks they
believe qualify for “well-known” status and to applicants
for registered trade marks. A pre-existing well-known
trade mark belonging to a third party is an obstacle for
the subsequent registration of the same or similar sign
for the same or similar products by another party.
As such, parties seeking to register a trade mark in
Poland should make a careful examination not only
of the trade mark register but also of the market
in which they wish to register their mark in order
to identify potential well-known trade marks.
Isabelle Dupuis and
Guillaume de Villegas de Clercamp,
These modifications affect all users of the Benelux trade
mark system. The most significant changes to day-to-day
• The BOIP amended the method for calculating the
opposition period, affecting the duration of the opposition
period. The opposition period of two months was
calculated from the first day of the month following
publication of the application but will now be calculated
starting from the actual date of publication, decreasing
the opposition period from a possible almost three
months to a fixed two months. Opponents will need to
react more swiftly and the negotiation period preceding
the launch of an opposition will be reduced.
• The cooling off period and suspension of opposition
proceedings on joint request has been extended to
four months, as well as any prolongation thereof. This
modification is the result of a survey on the evaluation
of the opposition proceedings conducted by the BOIP.
Previously, the opposition could only be deferred
for a period of two months, which was considered
an inadequate period of time for the parties to find
an amicable solution. The extension to four months
answers this concern, and will in most cases also result in
decreased costs for the extension of the deadlines.
• The BOIP has simplified the procedure for the renewal
of trade mark registrations, which will speed up and
reduce the costs of this process. The renewal of a trade
mark used to be subject to two requirements: a written
request for renewal and the payment of the related fees.
Procedural changes at the
Benelux Office for Intellectual
Property and their impact
On 1 October 2013, important procedural changes came into effect
in the Benelux. These changes form part of a global initiative and
work plan of the Benelux Office for Intellectual Property (BOIP) to
improve the quality, efficiency, reliability and user-friendliness of its
services, and to harmonise and modernise the procedures.
The BOIP also re-examined the list of goods and services
at the time of renewal. Payment of the official fees through
an online payment tool available on the BOIP’s website
will now suffice to renew the registration, without any reexamination
of the classification by the BOIP.
• English is adopted as the third working language of the
BOIP, in addition to French and Dutch. Any business
with the BOIP can now be conducted in English. This
will expedite the communication process for foreign
companies, reduce related translation costs and limit the
risk of mistakes through translations.
Further changes are under discussion, such as the extension
of the grounds for opposition against a trade mark
application and the centralisation of the appeal procedure
of the BOIP’s decisions before the Benelux Court of Justice.
Currently, appeals are dealt with by the national courts,
resulting in disparate case law between the countries,
legal uncertainty and forum shopping. All in all, a work in
progress, but progress has already been made!
The CJEU dismissed an appeal brought by New
Yorker SHK Jeans GmbH & Co. KG against OHIM
on basis of the alleged late filing of documents
to prove the genuine use of a trade mark in
opposition proceedings. The CJEU decided
that OHIM was entitled to take into account
additional documents if they serve to complete
the documents provided originally (Case C-621/11).
The CTM application of New Yorker Jeans for the word mark
Fishbone for classes 18 (leather goods) and 25 (clothing,
footwear, headgear) was opposed on basis of an earlier
Greek figurative mark FISHBONE Beachwear registered for
t-shirts and beachwear in class 25. During the proceedings
New Yorker Jeans requested proof of use of the earlier Greek
mark. The opponent submitted a first set of documents
which included affidavits, receipts and several photographs.
After New Yorker Jeans claimed these documents would not
demonstrate genuine use of the opposition trade mark the
opponent handed over catalogues as further documents.
Fishbone vs. Fishbone
(Beachwear): Court of Justice
of the European Union (CJEU)
decides on admissibility of further
documents to prove genuine
use in opposition proceedings
OHIM considered both sets of documents and rejected
New Yorker Jeans’ application. New Yorker Jeans
then appealed against the decision and claimed that
the second set of documents should not have been
considered as OHIM is required to reject an opposition
where no or only irrelevant proof of use is filed. The
appeal was denied by the Board of Appeal and also by
the General Court. Both took the view OHIM had the
right to take into account the further documents.
On appeal, the CJEU held that OHIM could take account
of the further documents submitted by the opponent.
OHIM was only precluded from taking into account further
documents where no proof of use had been filed within
the original deadline or where the proof delivered within
the deadline appeared irrelevant to demonstrate genuine
use. In those cases, OHIM would be bound to reject the
application. In cases where no sufficient proof was delivered
within the original deadline, OHIM may take into account
further documents as long as those further documents
serve as an addition to the evidence already provided.
The Fishbone decision follows recent decisions dealing with
late submissions but more importantly clarifies findings
of the CJEU in OHIM v KAUL (Case C-29/05) that (1) it was
within OHIM’s discretion to take into account evidence
filed late and (2) it will be likely that OHIM considers such
evidence if the further materials are relevant for the outcome
of the case and the stage of the proceedings as well as the
surrounding circumstances do not militate against it.
Tesco’s twitter feed: #nojoke
Tesco Mobile recently launched their ‘#nojoke’ twitter campaign to
revamp their brand image and prove that they are a serious contender
in the market.
Their satirical responses to somewhat negative tweets from the
general public and engaging in a rap battle resulted in the account
going viral with one of their comments being re-tweeted over 11,000
In general, the response to Tesco Mobile’s clever tactic has been
favourable, and Tesco appear to be on the right path to showing that
their brand is in fact ‘#nojoke’.
Facebook delights brands with
new promotion policy
Traditionally brands have had to run promotions within
apps on Facebook, meaning some thought the take up from
their targets wasn’t always as effective as it could be.
Facebook have established a new and improved promotion
policy, allowing brand owners to host these promotional
activities directly on their Timelines. This means users would
no longer be diverted from the brand page. The change is likely
to boost the number of promotions launched on Facebook
and could lead to a broader range of contests being held.
Find the new policy at:
Upcoming industry events
Sustainable Brands Rio 2014
24 - 25 April 2014
Rio de Janeiro, Brazil
Two days of extraordinary conversation
and insight as the global sustainable
brand movement continues to grow in
Association (IFA) Annual
22 - 25 February 2014
New Orleans, USA
World-class speakers, franchise
experts, development and networking
Social Media Marketing
Conference: #SMWF Europe
31 March – 1 April 2014
London, United Kingdom
The sixth annual #SMWF Europe will
be gathering around 500 industry
professionals; delivering experience and
practical hands-on guidance
12th Anti-Counterfeiting &
Brand Protection - West Coast
27 – 29 January 2014
San Francisco, USA
At this annual cross-industry event,
you’ll learn from Brand Protection
leaders, Trademark Counsel, IP Counsel,
Investigators, and many others.
Festival of Media
16 – 18 March 2014
The premier festival in the Asian region
where media leaders gather to exchange,
experience and shape their industry.
IP Leadership Forum 2014
7 - 9 January 2014
New Delhi, India
Bird & Bird is sponsoring this
conference, with renowned trade mark
lawyer Allan Poulter also leading a
session, the theme being “IP Challenges
in Today’s Turbulent Environment”.
CIM’s Social media, the gateway to
customers, business intelligence and
brand awareness seminar
2 December 2013
Northampton, United Kingdom
The Chartered Institute of Marketing’s seminar
on how to use social media to enhance your
The Food & Drink Innovation Network’s
Provision of Food Information to
Consumers (FICR) Briefing Day
27 November 2013
Northampton, United Kingdom
Briefing Day on the new Provision of Food Information
to Consumers rules and regulations.